Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
DETAILED ACTION
Claim Status
Claims 1-7 are cancelled.
Claims 8-27 are new.
Claims 8-27 are pending.
Election/Restrictions
Applicant's election with traverse of Group II, claims 14-21, directed to a method of producing a paste-like silicone composition, in the reply filed on 26 Feb 2026 is acknowledged. The traversal is on the ground(s) that the subject matter of the different groups is sufficiently related that there is not a serious burden for search and examination. This is not found persuasive as such arguments do not apply when the restriction is required under 35 U.S.C. 121 and 372, as in the instantly filed application. Thus, when the Office considers international applications as an International Searching Authority, as an International Preliminary Examining Authority, and during the national stage as a Designated or Elected Office under 35 U.S.C. 371, PCT Rule 13.1 and 13.2 will be followed when considering unity of invention of claims of different categories without regard to the practice in national applications filed under 35 U.S.C. 111. As detailed in the Requirement for Restriction/Election dated 02 Jan 2026, unity of invention is lacking a posteriori, that is, after taking the prior art into consideration. Xing et al. (US 2018/0348220) renders obvious the technical feature of the instantly filed application.
The requirement is still deemed proper and is therefore made FINAL.
Claims 8-13 and 22-27 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
Claims 14-21 are under consideration.
Priority
Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d).
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 06 Mar 2024, 16 Sep 2024, 10 Dec 2024, 02 Jul 2025, and 26 Feb 2026 are in compliance with the provisions of 37 CFR 1.97, except where noted. Accordingly, the information disclosure statement is being considered by the examiner. NPL citations 1, 3 and 4 on the IDS filed 26 Feb 2026 were not considered. Documents were provided that were in Japanese and it could not be determined if they represented the documents listed on the IDS. Regarding NPL citation 1, a translated copy of a of the Japanese office action for Japanese Patent No. 7617819B2 was provided but not for Application No. 2025/700738.
Claim Objections
Claims 14-21 are objected to because of the following informalities:
Claims 14-21 are objected to for depending from a withdrawn claim (i.e., claims 8-11). Claims 8-11 are withdrawn from consideration as being directed to a non-elected product, whereas the elected invention is directed to the method of producing. Claims 14-17 would need to be written in independent form prior to allowance.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 14-21 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claims 14, 15, 16 and 17 recite “the components (A-1) and (A-2) contain octamethylcyclotetrasiloxane, decamethylcyclopentasiloxane and dodecamethylcyclohexasiloxane, and each content ratio is 2,000 ppm or less in the components (A-1) and (A-2) respectively.” It is unclear if what is meant by the (A-1) and (A-2) containing these cyclo siloxane compounds as the definition provided for (A-1) and (A-2) does not encompass these compounds. It is not clear if these compounds are intended to represent the (A-1), (A-2) components, if they are in addition to the (A-1), (A-2) components or if they are even required to be present at all as the amount ratio recited for the compounds is 2000 ppm or less. Claims 18-21 are included in this rejection as they depend directly, indirectly, or include all the limitations of claims 14-17.
Claims 14-21 recite a “paste-like silicone composition.” It is unclear what limitation is intended to be encompassed by the term “paste-like.” It is not clear if the composition may be a paste or only similar to a paste and it is not clear what form would satisfy the requirement of “paste-like.” One of ordinary skill in the art would not be reasonably apprised to the scope of the invention.
Claims 18-21 are unclear in the recitation that the hydrosilylation reaction is carried out in the presence of “0.01 to 100 mass% of component (B) blended in the paste-like silicone composition.” If component (B) is at 100 mass% this would seem to exclude other components such as component (A). Thus, it is unclear what the percentage of (B) is intended to refer to in relation the overall paste-like silicone composition.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 14-21 are rejected under 35 U.S.C. 103 as being unpatentable over Xing et al. (US 2017/0348220, 07 Dec 2017, listed on IDS filed 02 Jul 2025).
Xing teaches personal care compositions with crosslinked polyorganosiloxane (title). Xing teaches that polyorganosiloxane gels are made by the hydrosilylation of ethylenically unsaturated polyorganosiloxane by hydrogen polyorganosiloxne in an oil-in-water emulsion reaction medium ([0003]). Xing teaches the formation of a crosslinked polyorganosiloxane O/W gel emulsion obtained from the polymerization of polyorganosiloxane I and polyorganosiloxane II ([0004]). A gel emulsion is understood to render obvious a “paste-like” composition. Xing teaches example preparations 1-3 between polyorganosiloxanes I and polyorganosiloxanes II as shown in Table 1 ([0066]).
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152
336
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Xing teaches the variables for the generic structures as ([0028]):
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118
135
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269
341
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For ease of comparison with the instant claims, the examiner has drawn the structures for the polyorganosiloxane I (MVD560DV36MV) and polyorganosiloxane II (MHD20MH) of example 1 using the definitions shown above.
Polyorganosiloxane I:
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140
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Polyorganosiloxane II:
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R4, R5, R7, R8, R13, R14, and R17 are defined above as a hydrocarbon group up to 60 carbon atoms. R6 and R16 are defined above as an ethylenically unsaturated group. With these structures and definitions, the polyorganosiloxane I and polyorganosiloxane II of example 1 taught by Xing render obvious the A-1 and A-2 siloxane compounds of the instant claims. As part of example 1 Xing teaches specific compounds of vinyl polydimethylsiloxane and bis-hydrogen dimethicone ([0067]) which render obvious the A-1 and A-2 structures. Xing teaches the addition of ammonium persulfate to commence free radical polymerization of the vinyl polydimethylsiloxane and it hydosilylation by the bis-hydrogen dimethicone ([0067]) rendering obvious the hydrosilylation reaction in the presence of a catalyst as in the instant claims. Xing teaches combining with isododecane ([0067]), rendering obvious the component (B) “oil in a liquid state at 25°C.” Xing teaches the oil phase can constitute 1 to 80 weight percent of the emulsion polymerization reaction medium ([0044]) rendering obvious the 0.01 to 100 mass% of component (B) as in claims 18-21. Xing teaches that it is advantageous for the D4 (i.e. octamethylcyclotetrasiloxane) and D5 (decamethylcyclopentasiloxane) content to be less than 1,000 ppm ([0073]) and teaches that the content of D4 and D5 in Example 1 was 0.021 wt% (i.e. 210 ppm) and 0.032 wt% (i.e. 320 ppm) ([0073], Table 2), meeting the limitation of 2,000 ppm or less. Xing teaches that cyclic siloxanes are low viscosity and highly flowable liquids and thus not readily retained within a formulation and separate within a package unit or flow in an uncontrollable manner across the skin upon application ([0002]).
Xing does not expressly teach selecting the polyorganosiloxane compounds for a hydrosilylation reaction with a catalyst and where the octamethylcyclotetrasiloxane, decamethylcyclopentasiloxane, and dodecamethylcyclohexasiloxane with sufficient specificity to rise to the level of anticipation.
However, it would have been prima facie obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention to have formed a gel emulsion from a hydrosilylation reaction between polyorganosiloxane compounds such as vinyl polydimethylsiloxane and bis-hydrogen dimethicone in the presence of ammonium persulfate (a catalyst) and isododecane (an oil) where the cyclic siloxane concentration, such as octamethylcyclotetrasiloxane, decamethylcyclopentasiloxane, and dodecamethylcyclohexasiloxane are less than 1,000 ppm. One of ordinary skill in the art would have been motivated to do so as polyorganosiloxane hydrosilylation reactions are taught by Xing as suitable for forming gel emulsions. As noted above, Xing specifically teaches that the octamethylcyclotetrasiloxane and decamethylcyclopentasiloxane content should be less than 1,000 ppm. Although Xing does not address dodecamthylcyclohexasiloxane, one of ordinary skill in the art would desire to have the concentration low as cyclic siloxanes are not readily retained within a formulation and separate within a package unit or flow in an uncontrollable manner across the skin upon application, as taught by Xing. With this teaching and the specific teaching from Xing regarding octamethylcyclotetrasiloxane and decamethylcyclopentasiloxane, one would desire and have a reasonable expectation of success keeping additional cyclic siloxanes such as dodecamthylcyclohexasiloxane concentration less than 1,000 ppm as they are known to separate within a package and flow uncontrollably across the skin upon application.
Accordingly, the instant claims are rendered prima facie obvious over the teachings of Xing.
Conclusion
No claim is allowed.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to EDWIN C MITCHELL whose telephone number is (571)272-7007. The examiner can normally be reached Mon-Fri 8:00-5:00.
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/E.C.M./Examiner, Art Unit 1619
/ANNA R FALKOWITZ/Primary Examiner, Art Unit 1600